Ex Parte Pompilio et alDownload PDFPatent Trial and Appeal BoardFeb 23, 201713330779 (P.T.A.B. Feb. 23, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/330,779 12/20/2011 Daniel V. Pompilio 519794-605005 9712 24325 7590 PATENT GROUP 2N JONES DAY NORTH POINT 901 LAKESIDE AVENUE CLEVELAND, OH 44114 EXAMINER MAI, HUY KIM ART UNIT PAPER NUMBER 2872 MAIL DATE DELIVERY MODE 02/24/2017 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL V. POMPILIO and JASON P. ZAMER Appeal 2015-005357 Application 13/330,779 Technology Center 2800 Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner’s decision rejecting claims 1—6 and 8—25, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Representative claim 1 is reproduced below from the Claims Appendix of the Appeal Brief dated December 23, 2014 (“App. Br.”). The limitations at issue are italicized. 1. A computer-implemented method of adaptively controlling a user computer experience, comprising: Appeal 2015-005357 Application 13/330,779 administering, using a computer-implemented testing program on a graphical user interface of a computer and one or more data processors, a test to record user metrics; wherein the test measures a user’s cognitive ability, and adapting a graphical user visual interface of the computer outside of the testing program to correspond to the user’s cognitive ability measured through the testing using the one or more data processors by adjusting one or more computing environment settings. App. Br. 11. The claims on appeal stand rejected as follows: (1) claims 1—6 and 8—25 under 35 U.S.C. § 112, first paragraph, based on the written description requirement; (2) claims 1—6 and 8—25 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention; and (3) claims 1—6 and 8—25 under 35 U.S.C. § 102(e) as anticipated by Kiirkure.1 B. DISCUSSION 1. Rejection (1) The Examiner finds the original specification does not provide written description support for the limitation “[the] test measures a user’s cognitive ability” and “a graphical] user visual interface” recited in claims 1, 24, and 25. Non-Final 9;2 Ans. 3.3 “The test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed 1 US 7,517,086 Bl, issued April 14, 2009 (“Kiirkure”). 2 Non-Final Office Action dated September 23, 2014 (“Non-Final”). 3 Examiner’s Answer dated March 27, 2015. 2 Appeal 2015-005357 Application 13/330,779 reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, rather than the presence or absence of literal support in the specification for the claim language.” In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). Moreover, “original claims constitute their own description. Later added claims of similar scope and wording are described thereby.” In re Roller, 613 F.2d 819, 823—24 (CCPA 1980) (citing In re Gardner, 475 F.2d 1389 (CCPA 1973)). Claim 1, as originally filed, reads as follows: 1. A computer-implemented method of adaptive controlling a user computer experience, comprising: administering, using one or more data processors, a test to record user metrics', wherein the test measures a user’s cognitive ability, and adapting a user visual interface to correspond to the user’s cognitive ability measured through the testing using the one or more data processors. Spec. 25 (emphasis added). Original claim 1 and appealed claim 1 are of similar scope.4 Thus, we find that claim 1, as originally filed, provides written description support for “the test measures a user’s cognitive ability” recited in appealed claim 1. Likewise, original 4 We note that the differences between original claim 1 and appealed claim 1 include (1) a recitation in appealed claim 1 that a test to record user metrics is administered using “a computer-implemented testing program on a graphical user interface of a computer” in addition to the one or more data processors recited in original claim 1 and (2) appealed claim 1 recites that “a graphical user visual interface of the computer outside of the testing program” is adapted to correspond to the user’s cognitive ability “by adjusting one or more computing environment settings.” App. Br. 11; see also Spec. 25. Similar differences are noted between original claims 24 and 25 and appealed claims 24 and 25, respectively. See App. Br. 15; Spec. 29-30. 3 Appeal 2015-005357 Application 13/330,779 claims 24 and 25 recite that “the test measures a user’s cognitive ability” and are of similar scope to appealed claims 24 and 25, respectively. See Spec. 29-30. Thus, we also find that claims 24 and 25, as originally filed, provide written description support for “the test measures a user’s cognitive ability” recited in appealed claims 24 and 25. As for the limitation “a graphical user visual interface” recited in claims 1, 24, and 25,5 we recognize that the term “graphical” is not used in combination with “user visual interface” in the Appellants’ original disclosure. Nonetheless, the Appellants argue that “[t]he specification and drawings detail graphic user visual interfaces as one of ordinary skill in the art would understand the term to mean throughout, evidencing possession of the concept.” App. Br. 6. For support, the Appellants rely on page 2, lines 8—9 and page 7, lines 6—8 of the Specification, Figures 2, 3, 5A, and 5B, and the descriptions of those Figures on page 5 of the Specification. App. Br. 6; Reply Br. 2—3.6 The Examiner, in the Examiner’s Answer, does not address the portions of the Specification or the Figures relied on by the Appellants. See Ans. 7—8. The Appellants disclose that Figure 5A, for example, depicts “example customized user interfaces that are generated based upon results of an eye test.” Spec. 3,11. 13—14. The Appellants’ Figure 5A is reproduced below: 5 App. Br. 11, 15. 6 Reply Brief dated April 22, 2015. 4 Appeal 2015-005357 Application 13/330,779 Appellants’ Figure 5A depicts a customized user interface. The Appellants disclose that “FIG. 5A depicts a display 130 customized for a user who demonstrates a high visual ability in an administered eye test. The three icons 132, 134, 136 are sized at or above a minimum icon size 138 set based upon the visual acuity score.” Spec. 8,11. 12—14; see also Spec. 10,11. 9-10 (FIG. 8A depicts click footprints 204 associated with icon/icon text pairings 202). Based on the foregoing, we find one of ordinary skill in the art would have understood that the user interface depicted in Appellants’ Figure 5A is a graphical user interface and would have further understood that a graphical user interface is synonymous with a “graphical user visual interface” recited in claims 1, 24, and 25. For that reason, we find the Appellants’ original disclosure provides written description support for the “graphical user visual interface” recited in claims 1, 24, and 25. The rejection of claims 1—6 and 8—25 based on the written description requirement of § 112, first paragraph, is not sustained. 5 Appeal 2015-005357 Application 13/330,779 2. Rejection (2) The Examiner concludes that the claims on appeal are rendered indefinite by the phrase “the test measures a user’s cognitive ability.” More specifically, the Examiner asks, “What is the test?” and questions whether the eye test disclosed in the Appellants’ Specification can measure a user’s cognitive ability. Non-Final 10. The Appellants argue: In Applicant’s response of July 9, 2014, Applicant provided a definition of the term “Cognition,” submitted herewith as Exhibit A, that defines “Cognition” as “the process of knowing or perceiving-, perception.” An eye test measures user perception as it measures a user’s ability to recognize displayed letters of different sizes using the physical sense of sight. By measuring a user’s sight ability, an eye test measures a user’s ability to perceive, and therefore measures a user’s cognitive ability. App. Br. 7—8. For that reason, the Appellants argue that the claims on appeal are definite under § 112, second paragraph. The Examiner, however, maintains that: [T]he selected definition for “cognition” is found in Webster’s Dictionary as provided by the appellant but not from the original specification or drawings. Thus lack of providing a concept of “cognition” renders the claimed term indefinite to those skilled in art since an artisan can find nowhere a meaning that must fall within the broadest reasonable interpretation of the claimed term. Ans. 9. “The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification. If the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, §112 demands no more.” Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (citation omitted). 6 Appeal 2015-005357 Application 13/330,779 In this case, the original disclosure does not provide a definition of “cognitive.” Moreover, the only express description of a test that measures “a user’s cognitive ability” is found in the originally filed claims. For example, claim 1 recites, in relevant part: 1. A computer-implemented method of adaptive controlling a user computer experience, comprising: administering, using one or more data processors, a test to record user metrics; wherein the test measures a user’s cognitive ability .... Spec. 25 (emphasis added). The Appellants contend that an eye test measures a user’s cognitive ability. App. Br. 7—8. However, original claim 13, which depends from claim 1, recites “wherein the test further includes an eye test. . . .” Spec. 27 (emphasis added). Based on the doctrine of claim differentiation and the language of original claim 13, it is unclear whether an eye test is an example of a test that measures a user’s cognitive ability or is a test in addition to measuring a user’s cognitive ability.7 Thus, we find the metes and bounds of the phrase “the test measures a user’s cognitive ability” recited in independent claims 1, 24, and 25 are not clear on this record. In sum, the record on appeal supports the Examiner’s conclusion that claims 1—6 and 8—25 are rendered indefinite by the phrase “the test measures a user’s cognitive ability.” Therefore, the rejection of claims 1—6 and 8—25 based on § 112, second paragraph, is sustained. 7 Similarly, claim 16, which depends from claim 1, recites “wherein the test further includes a mouse dexterity test. . . .” Spec. 27 (emphasis added). It is also unclear whether a mouse dexterity test is an example of a test that measures a user’s cognitive ability or is a test in addition to measuring a user’s cognitive ability. 7 Appeal 2015-005357 Application 13/330,779 3. Rejection (3) The Examiner finds Kiirkure discloses a method for testing a user’s visual acuity using an eye chart.8 Non-Final 10-11. As discussed above in sustaining the rejection under § 112, second paragraph, it is not clear on this record whether an eye test is an example of a test that measures a user’s cognitive ability. Therefore, speculation and assumptions would be required to determine whether the claimed subject matter is anticipated by Kiirkure. Speculation and assumptions, however, are not proper in a prior art rejection. See In re Steele, 305 F.2d 859, 862—63 (CCPA 1962) (reversing prior art rejection because rejection was based on speculation as to the meaning of claim terms and assumptions as to claim scope). On this record, we cannot sustain the § 102(e) rejection of claims 1—6 and 8— 25. We emphasis that our reversal is not a reversal based on the merits of the rejection but rather is a procedural reversal predicated upon the indefiniteness of the claims. C. DECISION The Examiner’s decision rejecting claims 1—6 and 8—25 under 35 U.S.C. §112, first paragraph, based on the written description requirement is reversed. The Examiner’s decision rejecting claims 1—6 and 8—25 under 35 U.S.C. §112, second paragraph, as being indefinite is affirmed. 8 In one embodiment, Kiirkure discloses that the eye test is administered by a computer system. See Kiirkure, col. 5,11. 21—33. 8 Appeal 2015-005357 Application 13/330,779 The Examiner’s decision rejecting claims 1—6 and 8—25 under 35 U.S.C. § 102(e) as anticipated by Kiirkure is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED 9 Copy with citationCopy as parenthetical citation